Ex Parte Singh et alDownload PDFPatent Trials and Appeals BoardOct 29, 201412175441 - (D) (P.T.A.B. Oct. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAJINDER SINGH, HUI LI, HAORAN ZHAO, DONALD PAYAN, RAO KOLLURI, KIN TSO, JOHN RAMPHAL, and SHIHAI GU ____________ Appeal 2012-004966 Application 12/175,441 Technology Center 1600 ____________ Before DEMETRA J. MILLS, ULRIKE W. JENKS, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims directed to 2,4-pyrimidinediamine compounds that are useful for the modulation of protein kinase C. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE “Protein kinases constitute a large family of structurally related enzymes that are responsible for the control of a variety of signal 1 Appellants identify Rigel Pharmaceuticals, Inc. as the Real Party in Interest. (App. Br. 3.) App App trans invo apop regu (id. a cond know foun Claim as fo unde analy fall w 2 Sin eal 2012-0 lication 12 duction pr lved in “ce tosis. . . . lation of im t 2: ¶ 5). itions in w n as PKC Claims 1 d in the Cl 1 is repr llows: 1. A com N-oxide The Exa r 35 U.S.C As Appe sis on cla ith that c gh et al., U 04966 /175,441 ocesses w ll prolifer PKC-theta mune res The Speci hich modu ) is therap , 2, 4, 9–1 aims App esentative pound of , or therap miner has . § 103(a) llants do n im 1, and laim (App S 2005/0 ithin cells” ation, diffe is primar ponses an fication di lation or eutically u 7, 20, 43, endix of th of the clai formula I eutically a rejected cl as unpate ot argue t claims 1, 2 . Br. 12). 234049 Al 2 (Spec. 1: rentiation ily implica d in insulin sclosed co inhibition seful” (id. 45, 47, an e Appeal B ms on app : cceptable aims 1, 2, ntable ove he claims , 4, 9–17, 37 C.F.R. , published ¶ 3.) Prot , metaboli ted in T c resistanc mpounds f of Protein at 1: ¶ 2). d 48 are on rief (App eal, and re salt thereo 4, 9–17, 2 r Singh.2 separately 20, 43, 45 § 41.37 (c Oct. 20, ein kinase sm, and ell activati e in skelet or “the tre Kinase C appeal, a . Br. 24–3 ads in rele f; wherein 0, 43, 45, , we focus , 47, and 4 )(1). 2005. C’s are on and al muscle” atment of (also nd can be 3). vant part : . . . . 47, and 48 our 8 stand or App App The I indiv exem gene Man comp deve Exam claim Find any o the c meth pyrim eal 2012-0 lication 12 ssue The Exa idual com plify a cla ral formul y of the co ounds, an lopment” Does the iner’s po 1? ings of Fa FF1. Th f the insta FF2. Th laimed co The Figu ylpiperazi idinediam 04966 /175,441 miner reco ponents o imed com a and guid mpounds y one of w (id. at 6). preponde sition that ct e Examin ntly claim e Examin mpound: re above, no)phenyl ine. (An gnizes tha f the claim pound, [bu ance to ma discussed hich coul rance of th Singh rend er acknow ed compo er finds th shows the ]-N4-(1,2, s. 5.) “Thi 3 t although ed molecu t instead ke the ins above are d be used a e evidenc ers obvio ledges tha unds” (An at Singh d positional 2,6,6-pent s is a posi Singh “di le” (Ans. finds] this tantly clai effective a s a lead c e of record us the com t Singh do s. 5). isclosed a isomer 5- amethylpi tional isom sclose[d] t 5), Singh “ art provid med comp nti-inflam ompound support t position a es not “ex positional fluoro-N2 peridin-4-y er of the he do[es] not es a ounds. matory for further he s recited in emplify isomer of -[3-(4- l)-2,4- claimed Appeal 2012-004966 Application 12/175,441 4 compounds (i.e. the methyl substituent on the piperazinyl moiety cannot be at the 4-position according to Claim 1).” (Id.) Principle of Law To establish obviousness, the Examiner must identify some reason that would have led a chemist to modify a known compound. Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007). Generally, an obviousness inquiry concerning such “known compounds” focuses on the identity of a “lead compound.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008). Analysis The Examiner arrives at the selection of compound No. 1219 in Singh as the base compound for making modifications based on the structural similarity to the claimed compound, recognizing that compound No. 1219 “is a positional isomer of the claimed compounds” (Ans. 5; FF 1–2), citing In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) in support (Ans. 9). The Examiner explains that once structural similarity is established, it is not necessary for the art to show the same or similar utility as claimed (id.). “Motivation to modify the exemplified compounds in Singh, et al., would be to develop compounds that possess superior pharmacokinetic or pharmacodynamic properties.” (Ans. 6; see also Ans. 9.) Appellants contend that the Examiner has not identified a reason to select a particular compound from Singh as a lead compound (App. Br. 13). Appellants explain that Appeal 2012-004966 Application 12/175,441 5 Compound 1219 was tested in LD Tryptase assay, CHMC, IgE, 3 point. As shown on page 122 of Singh, the IC50 of Compound 1219 is more than 10 μM, with no measurable activity at 10 μM concentration. In contrast, Singh's Compound 994 had an IC50 of 47 nanomolar in the LD Tryptase assay, i.e., greater than 200-fold more potent than Compound 1219. (App. Br. 14.) Given the present facts, we find that Appellants have the better position. Whether a lead compound and a claimed compound have a sufficiently close relationship frequently turns on their “structural similarities and differences.” Daiichi Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d 1346, 1352 (Fed. Cir. 2010). We agree with the Examiner that compound 1219 is structurally close to the claimed compounds. Structural similarity alone may be sufficient to establish a motivation to make modifications in some instances. However, “[p]roperties must be considered in the overall evaluation of obviousness, and the lack of any disclosure of useful properties for a prior art compound may indicate a lack of motivation to make related compounds.” In re Dillon, 919 F.2d at 698. Here, Singh evaluated the properties of the disclosed compounds and concluded based on their experimental parameters that compound No. 1219 did not display any favorable activities (see Singh 44: ¶¶ 394-397, ¶ 399 compound # 1219). To be sure, the present claims do not recite a particular property associated with the compound, i.e., that they are protein kinase C modulators. Thus, any positive activity associated with compound No. 1219 could provide a reasonable motivation to modify and make related compounds. But in this case, the experimental results using a cultured human mast cell-tryptase assay only showed a negative result for compound No. 1219 (see Singh 44: ¶¶ 394-397, ¶ 399 compound # 1219; see also App. Appeal 2012-004966 Application 12/175,441 6 Br. 14). The Examiner would like us to ignore these results, asserting that the [A]rt does not teach that these compounds are not anti- inflammatory agents; rather, it indicates that these compounds do not meet the threshold in an in vitro assay to warrant a “+”. The art worker has no way of knowing how close these compounds are to a “+” and, therefore, the data in Singh, et al., are not a negative teaching to direct the art worker away from these compounds. (Ans. 9–10.) We do not agree with the Examiner’s position that we can simply disregard the unfavorable experimental data shown in the prior art. A lead compound needs to be “a natural choice for further development efforts.” Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1008 (Fed. Cir. 2009). Here, the experimental results indicate that compound No. 1219 is not an attractive candidate for further modification to improve the activities for the purpose tested in Singh. We recognize, but are not persuaded by, the Examiner’s position that Singh provides the core structure and the individual building blocks, and thereby render the claims obvious. Specifically, the Examiner explains By way of analogy, if the instantly claimed compound is represented by the formula A-Core-l, the prior art contemplates subgroups A (among others) and 1 (among others) to be attached to the Core. This art, then, exemplifies compounds A- Core-2 and B-Core-l, thus providing guidance for the artisan to attach A and 1 to the Core. Singh, et al., provides guidance regarding how to make the instantly claimed compounds since the art worker would merely be starting with different beginning moieties already, taught by the art, to link to the disclosed core. (Ans. 8.) Appeal 2012-004966 Application 12/175,441 7 Although we agree with the Examiner that the individual building blocks are disclosed in Singh, we find that the Examiner has not provided a sufficient rationale to pick compound No. 1219 as the starting point for making modifications. Here, given the experimental data disclosed in Singh, compound No. 1219 is not a “natural choice” for selection to improve upon the compound’s inhibition of SYK kinase. See Altana Pharma AG, 566 F.3d at 1008. The Examiner provides no other persuasive reason to modify the compound with the disclosed building blocks or to otherwise modify the compound by changing the methyl position. Furthermore, we note that “‘[i]t is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.’” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)). For the reasons discussed above, we agree with Appellants’ position. The Examiner has not persuasively shown that that there would have been a reason to choose compound No. 1219 as the starting point for making modifications to arrive at the presently claimed structure. We find that the preponderance of the evidence does not support the Examiner’s position and therefore reverse the rejection on appeal. SUMMARY We reverse the rejection of claims 1, 2, 4, 9–17, 20, 43, 45, 47, and 48 under 35 U.S.C. § 103(a) over Singh. REVERSED Appeal 2012-004966 Application 12/175,441 8 cdc Copy with citationCopy as parenthetical citation